Ex Parte Dumitrescu et alDownload PDFPatent Trial and Appeal BoardFeb 11, 201613036379 (P.T.A.B. Feb. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/036,379 02/28/2011 50447 7590 02/16/2016 DUFT BORNSEN & FETTIG, LLP 1526 SPRUCE STREET SUITE 302 BOULDER, CO 80302 FIRST NAMED INVENTOR Tiberiu Dumitrescu UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 4-033_FN201101563 4812 EXAMINER CATO,MIYAJ ART UNIT PAPER NUMBER 2676 NOTIFICATION DATE DELIVERY MODE 02/16/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): docketing@dbflaw.com PTOL-90A (Rev. 04/07) UNITEn STATES PATENT ANn TRA.nEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIBERIU DUMITRESCU and MICHAEL RAINES Appeal2014-004687 Application 13/036,379 Technology Center 2600 Before HUNG H. BUI, ADAM J. PYONIN, and NABEEL U. KHAN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. STATEMENT OF THE CASE Introduction The claims are directed to "filtering print shop services that are available to a customer based on rules for the customer." Abstract. Claims 1, 7, and 13 are independent. Claim 1 is reproduced below for reference: Appeal2014-004687 Application 13/036,379 1. A system comprising: a control system operable to identify services that are available from a print shop architecture, and to filter the available services based on rules for a customer to identify a subset of the available services; and a graphical user interface operable to display the subset of the available services to the customer as options for the customer to select for a print job, and to receive a selection from the customer of at least one of the options from the subset of the available services, wherein the control system is further operable to generate a job ticket for the print job based on the selection by the customer, and to transmit the job ticket to the print shop architecture. References and Rejections Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sekine (US 2009/0282412 Al; Nov. 12, 2009) and Barrott (US 2003/0212611 Al; Nov. 13, 2003). Final Act. 4. ISSUES Appellants' arguments present us with the following issues: A. Did the Examiner err in rejecting the claims, because the cited references do not teach or suggest filtering services available from a print shop? See Br. 7. B. Did the Examiner err in rejecting the claims, because Barrott is non-analogous art? See Br. 8. ANALYSIS Appellants do not separately argue claims 1-18. See Br. 10. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv). We have 2 Appeal2014-004687 Application 13/036,379 reviewed the Examiner's rejection in light of Appellants' arguments. We agree with the Examiner's findings and conclusions and adopt them as our own (see Final Act. 2-8; Ans. 2--4); we add the following primarily for emphasis. A. Filtering the Services Available from a Print Shop Appellants argue the Examiner erred in rejecting claim 1, because Sekine in view of Barrott does not teach or suggest filtering print shop services as claimed. See Br. 7-8. In particular, Appellants contend "Barrott does not discuss filtering funeral services based on rules for the customer. Instead, Barrott discusses a guided tour through all the available services, which the user can eventually end up with the desired services." Br. 7. Appellants do not persuade us the Examiner erred in finding Barrott teaches or suggests filtering services, as claimed. We find Barrott' s filtered list of products and services, which a user may cancel or revise, is tantamount to the "subset of the available services" as recited in claim 1. See Barrott i-f 13. We also agree with the Examiner that the recited "rules for a customer" encompasses Barrott' s "family advisor system," because the system uses questions with "set choices" to determine a filtered list of available services. See Barrott i-f 41; Final Act. 5; see also Spec. i-f 19 ("The logical relationships of print shop activities are hereinafter referred to as 'print shop rules' or 'rules."'). Thus, although Barrott does not disclose identical terminology as recited by claim 1, we find Barrott teaches or suggests a system operable to "filter the available services based on rules for a customer to identify a subset of the available services," as claimed. See Final Act. 5. 3 Appeal2014-004687 Application 13/036,379 Further, we are not persuaded by Appellants' arguments that the Examiner erred in finding one of skill in the art would filter print shop services by modifying the print shop services control system of Sekine with the services filtering system of Barrott. See Final Act. 5; Ans. 3--4; Sekine i-fi-150- 51. Rather, the Examiner's findings are reasonable and are supported by evidence because such combination of familiar elements does no more than yield predictable results. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). B. Non-Analogous Art Appellants contend "the problem faced by the inventors is how to help print shop[ s] avoid confusion in view of the wide variety of print shop services that are available." Br. 8. Appellants argue that, therefore, Barrott is not analogous art to the claimed invention, as "Barrott would not logically commend itself to the inventors attention in considering the problem of how to reduce customer confusion when generating jobs for a print shop[,] because generating a print job based on funeral services is not possible." Id. at 9. "The analogous-art test requires that the Board show that a reference is either in the field of the applicant's endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection." In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). "A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's 4 Appeal2014-004687 Application 13/036,379 attention in considering his problem." Jn re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). The Examiner finds Barrott is reasonably pertinent because "the particular problem with which the applicant [is] concerned" is the same as for Barrott, which is to "limit options (products and services) that can be selected by a user on a user interface based on availability of the options." Ans. 3. We agree, and find Barrott's teaching of a "graphical user interface to help a user view, choose and sort through available services" would logically have commended itself to an inventor's attention in creating the filtering services system of the present application. See Final Act. 3; Barrott Fig. 4. Therefore, one of ordinary skill would recognize the usefulness of Barrott's teachings to filter the printing services shown by Sekine. See Final Act. 5. Appellants do not persuade us the Examiner erred in citing to Sekine and Barrott, or that the Examiner's combination of Sekine and Barrott was "uniquely challenging or difficult for one of ordinary skill in the art." See Final Act. 5---6; Ans. 4; see also Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Accordingly, we sustain the Examiner's rejection of claim 1. DECISION We affirm the rejection of claims 1-18. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 5 Appeal2014-004687 Application 13/036,379 tj 6 Copy with citationCopy as parenthetical citation